IRT Final Report

["Scott Donahey" <adr@xxxxxxxxxxxxxxxx>]

July 1, 2009

 

Dear ICANN, members of the IRT,

 

            Having reviewed the IRT's Final Report, and the many interesting
ideas it brings together, I appreciate the opportunity to provide the
following comments:

 

IP Clearinghouse

 

            The IP Clearinghouse model, with such an all encompassing role,
is ripe for abuse.  This reminds me of the privatization of the types of
services normally provided by governmental agencies or NGO's.  There are
several databases of international trademarks.  It seems to me that that
portion of the role should be handled by one or more of those organizations
already involved in the maintenance of similar databases.  The validation of
marks should be done by a separate agency.  There is no reason for
validation to be performed by the database manager (other than as another
potential source of profit for the IP Clearinghouse).  There are already
several IP watch notice services operating that have been in this area for
quite some time.  Why duplicate these efforts?

 

Globally Protected Marks List (GPML)

 

            The GPML identity requirements completely miss the most common
forms of cybersquatting - typosquatting and <brandplusgenericword.gTLD>.
Also, the confusing similarity analysis requires showing that the domain
name at issue is visually similar to the trademark, aurally similar to the
trademark, and that its commercial impression is confusingly similar to the
trademark.  It would seem that any one of these by itself would be
sufficient.  It is not clear either how one would establish the "commercial
impression" of a domain name.  Finally, I can see a real possibility that
major mark holders would try to influence the criteria for inclusion on the
GPML, so as to qualify for inclusion themselves and to exclude as many of
their competitors as possible.

 

            I find footnote 18 at page 20 of the Report unclear.  If my
understanding is correct, would proving common law rights in the word in the
domain name mean actual common law rights recognized by the jurisdiction in
which the rights are asserted?  Or may a registrant located in a civil law
country show that his use of the word would be sufficient to establish
common law rights if he were in a common law jurisdiction?  I assume the
latter, otherwise the civil law country user is at a disadvantage.

 

Second Level Rights Protection Mechanisms

 

            I am troubled by the language in the Sunrise process section at
page 23 that states, "If the registry permits Sunrise registrations to be
based on legal rights other than registered trademarks, those other legal
rights must be capable of being authenticated and must be recognized under
the laws of the country in which the registry is organized."  This language
seems to say that only registries organized in common law countries can
recognize common law trademark rights.

 

Uniform Rapid Suspension System (URS)

 

            By way of clarification, regarding a requirement of bad faith
registration and use versus bad faith registration or use, I would note that
under the discussion of Pre-Launch IP Claims Service for Non-GPMs at page 22
of the report, the IRT uses the disjunctive or form in the required
acknowledgement number (iv) to be made by the registrant.  Why the IRT uses
the disjunctive here and not in the URS procedure is not clear.

 

            I would respectfully submit that the language "If the Examiner
finds that all of these elements are satisfied by clear and convincing
evidence and that there is no genuine contestable issue, then the Examiner
shall issue a decision in favor of the Complainant" seems almost
self-canceling.  It seems quite easy to say that while there is clear and
convincing evidence of a contestable issue, it is not a genuine contestable
issue.  Even so, if the URS is to be a real alternative to the UDRP, in so
called obvious cases where a registrant cannot be bothered to participate,
the need for a Panel strikes me as inefficient. 

 

            Given my experience as a UDRP panelist, my observations are that
these criteria might be broadly - perhaps inconsistently - interpreted by
panels, and also that the fees (service provider and panel) do not seem
realistic. The timing suggested in the Draft Report (alive in spirit in the
Final Report) that a Panel could review and decide a case in 15 minutes is
unrealistic.  The 14 days for a Panel decision, the same as the UDRP, does
not reflect a decidedly "rapid" suspension mechanism.

 

Post-Delegation Dispute Resolution Mechanism

 

            As to post-delegation dispute resolution mechanism, the
requirement of showing that a registry have "a bad faith intent to profit"
from infringing domain names could benefit from a list of several
non-exclusive illustrations in the burden of proof area.

 

           Based on past experience I am reluctant to believe that ICANN
would want to find that its registries had breached their agreements and/or
acted in bad faith, or that it has the resources to keep pace.
Transparency in enforcement and the ability for trademark owners to initiate
a post-delegation dispute in the post-delegation context are critical so
that it does not become mere window-dressing.  Otherwise, the process is
slowed down and the registry and registrant continue to profit in the
interim in bad faith.

 

            Finally, I believe that requiring the panel to suspend or
terminate the proceedings where a registry filed a declaratory relief action
in a country where such claims don't get to trial for many years is to leave
registries a loophole that will destroy the process and leave complainants
no alternative but to pursue court actions that may ultimately result in
unenforceable judgments.

 

            Thank you for the opportunity to comment on the IRT's work.

 

 

 

Best regards,

Scott Donahey

 

 

M. Scott Donahey

3790 El Camino Real, Suite 171

Palo Alto, CA 94306 

(650) 823-0338 Voice

(650) 941-4262 Fax 

www.scottdonahey.com